Vans Inc., USA, (hereinafter referred to as “Petitioner”) filed rectification petitions seeking cancellation of FCB Garment Tex India Pvt. Ltd. and Fateh Chand Bhansali’s (hereinafter collectively referred to as “Respondent”) trademarks “IVANS” and “IV ANS NXT” (impugned marks) under Sections 47, 57 and 125 of the Trade Marks Act, 1999 (hereinafter referred to as the said Act) before the Intellectual Property Appellate Board (IPAB) while relying on its registrations for the mark VANS/ (Vans’ trademarks). Pursuant to the dissolution of the IPAB, the matter was transferred to the High Court of Delhi. Both parties had a series of actions filed against each other. The present note discusses the rectification proceeding decided by the Delhi High Court.

Submissions on behalf of the Petitioner:

1. Contravention of Section 11(1)(b) of the Act: The Petitioner asserts that their trademark is an “earlier trademark,” the goods bearing the marks are identical or similar, there exists a likelihood of confusion, and there is a likelihood of association with the earlier mark.
2. Faulty Examination Report by the Trade Marks Registry: The Petitioner claims that their trademarks were not cited in the examination report for the impugned marks, violating Rule 33 of the Trade Marks Rules, 2017.
3. Section 12 of the Act has no application: The Petitioner argues that the Respondent cannot take the benefit of Section 12 on grounds of honest concurrent use as they have not provided any justifiable explanation for adopting the mark “IVANS.”

Submissions on behalf of Respondent:

1. Marks are not Deceptively Similar: The Respondent contends that the trademarks are not deceptively similar and provides a tabulation of differences between the marks.
2. No Omission by the Registrar: The Respondent argued that the registration was granted after following due procedure and the Impugned marks cannot be removed unless the registration itself is fraudulent.
3. Prior Usage of the Respondent’s Mark: The Respondent claimed that they have been using the mark “IVANS” since 1999, while the Petitioner entered the Indian market only in 2011.
4. Product Differentiation: The Respondent stated that they deal only in men’s apparel, while the Petitioner is famous for its footwear.
5. Acquiescence and Waiver: The Respondent argued that the Petitioner has filed the cancellation petition after 16 years of the Impugned Mark’s registration and unopposed enjoyment of the Impugned Mark for 20 years.
6. Difference in Price Points: The Respondent provided a comparative chart of the difference in price points between the parties’ products.

Court Ruling:

The Court analyzed the submissions and found that the rectification of the impugned marks should not be permitted. The court noted that:

1. Prior User: The court held that the Respondent was the prior user because the Respondent’s trademark ‘IVANS’ was filed in 2002 and granted in 2007, with the user claimed since April 1999 for ‘IVANS’ and April 2000 for ‘IVANS NXT’ in Class 25. The Petitioner launched their products in India only in 2011, despite having secured a registration with effect from 1992.
2. Product Differentiation: The Court noted that the Respondent was using the Impugned Marks for apparel, while the Petitioner was predominantly using it for shoes. The Court emphasized the difference in the products, price points, and customer base.
3. No Deceptive Similarity: The Court found that the competing marks were not deceptively similar. The device marks, trade dress, and manner of usage were different. The Court also noted that the customer base and price points were vastly different.
4. Acquiescence and Waiver: The Court observed that the Respondent had been using the mark ‘IVANS’ since 1999 openly and publicly without any opposition or objection. The Petitioner filed the cancellation petition 16 years after the registration of the respondent’s mark.
5. Section 34 of the Trade Marks Act: The Court held that Section 34 disentitles the proprietor of a registered trademark from interfering with or restraining the use of an identical or similar trademark if the trademark has been used prior to the user of the registered trademark or prior to the date of registration, whichever is earlier.

The court concluded that the marks were not deceptively similar, and that the Respondent’s use of the mark was not dishonest. The Court accordingly dismissed the petitions and allowed the Respondent to maintain its registration for the trademarks “IVANS” and “IV ANS NXT.”

Conclusion

This decision of the Hon’ble High Court of Delhi serves to emphasize the first in the market test and reaffirms the settled principle of law that a prior user of a mark will have superior rights as compared to a subsequent user of the mark.